Ex parte SHAW - Page 5




          Appeal No. 97-1841                                                          
          Application 08/315,052                                                      


          limitations of the appealed claim.  Nonetheless, the examiner               
          has cited Meijer which discloses, for instance in Figure 3,                 
          illuminating a sign by lamps placed in front of the sign to shine           
          thereon.  We agree with the examiner that it would have been                
          obvious to place lights as disclosed by Meijer in front of the              
          optical element structure disclosed in Palmquist to illuminate              
          the optical element structure.  Indeed, lighted highway signs are           
          ubiquitous.  It is our view that there is ample suggestion to               
          illuminate the highway sign disclosed in Palmquist if Palmquist’s           
          disclosed automobiles are not considered to provide a lamp means            
          that illuminates Palmquist’s sign.  Accordingly, there is clear             
          suggestion for the examiner’s combination of references under               
          35 U.S.C. § 103.                                                            
               Appellant has argued there is no suggestion or motivation              
          for combining the two references.  As noted above, it is our view           
          that the examiner has provided ample suggestion for the provision           
          of the lights of Meijer for illuminating the highway sign                   
          disclosed in Palmquist.  The appellant further argues that it is            
          not the object of the invention to provide a lamp to illuminate             
          the optical element.  However, we must note that the examiner’s             
          rejection of the claim on appeal is not directed to the object of           
          the invention, but rather to the claimed subject matter itself.             

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